Petroleo Brasileiro S.A - PETROBRAS v. Private Registration

Case No. D2011-1250

1. The Parties

Respondent is Private Registration of Grand Cayman KY, Overseas Territory of United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <copapetrobras.com> and <copapetrobrasdetenis.com> are registered with Bargin Register Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2011. On July 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. The Registrar did not reply to this request, or to subsequent requests made on July 27, August 1, and August 4, 2011. Consequently, the Center (having also advised the Internet Corporation for Assigned Names and Numbers (ICANN)) proceeded on the basis that the appropriate steps had been taken to prevent a registrant breach of paragraph 8(a) of the Policy, commonly known as cyberflight. The Center proceeded in this case on the basis that, for the adjudication of disputes concerning or arising from use of the disputed domain names, the domain name registrant had submitted in its Registration Agreement (“RA”) to the jurisdiction of the courts where the Registrar was located. In its August 4, 2011 email communication the Center duly advised the Registrar (copying ICANN) of this.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 9, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2011.

The Center appointed Richard G. Lyon as the sole panelist in this matter on September 7, 2011. The Panel finds that it was properly constituted and has jurisdiction1 to decide this administrative proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Evidence, most of it accompanying the Complaint, establishes the following facts pertinent to the Panel’s decision.

Complainant is a multinational oil and energy company based in Brazil. Around the world it is well known by its abbreviated name Petrobras (a term made up of the first syllable of the two words in its corporate name). Complainant holds trademarks for PETROBRAS registered with national authorities in Brazil, Chile, China, the European Union, and the United States of America. Complainant also owns and uses several Internet domain names that have PETROBRAS as their dominant feature.

Respondent is identified only as a privacy service. Respondent or its undisclosed principal registered the disputed domain names in February 2007. Screen shots of web pages at each of the disputed domain names taken June 21, 2007 indicate use as pay-per-click pages featuring gasoline-related hyperlinks. When the Panel attempted to access the websites at the disputed domain names he received a “Server error” message for <copabetrobras.com> and a page of hyperlinks, many goat-related, at <copapetrobrasdetenis.com>.

5. Parties’ Contentions

A. Complainant contends as follows:

Complainant has rights in PETROBRAS by reason of its registered marks and long use of the term in international commerce. PETROBRAS is the dominant feature of both disputed domain names.

Complainant has never licensed Respondent to use its marks, and Respondent is not commonly known by the term PETROBRAS. Respondent’s use of the disputed domain names for pay-per-click sites featuring Complainant’s largest product is not legitimate for Policy purposes. Respondent fits within none of the examples in paragraph 4(c) of the Policy of how to demonstrate a right or legitimate interest in either disputed domain name.

Respondent registered the disputed domain names long after the PETROBRAS mark had become universally associated with Complainant by reason of Complainant’s decades of use of the term to market petroleum products. Respondent’s use of the disputed domain names for commercial purposes capitalizing upon petroleum products and Complainant’s mark is an attempted free ride on the goodwill attached to Complainant’s mark – “the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of its web site or location of a product or service on its website or location.” (Complaint, paragraph 15, paraphrasing the Policy, paragraph 4(b)(iv)) Respondent’s failure to respond to several cease-and-desist letters from Complainant and, in the circumstances of this case, its use of a privacy shield are further evidence of bad faith.

B. Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar.

Complainant has provided undisputed evidence of its registered trademarks for PETROBRAS. As the disputed domain names incorporate that word as their principal component, both are confusing similar.

B. Rights or Legitimate Interests.

Complainant has made the required prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names. Respondent has come forward with no evidence to counter that showing, and nothing in the record indicates any right or legitimate interest.

C. Registered and Used in Bad Faith.

Respondent’s use of the disputed domain names that feature Complainant’s marks to generate revenue from links to products that feature Complainant’s main product is classic bad faith, as Complainant argues foursquare within the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy. Respondent does not distinguish between registration and use in bad faith, each of which must be separately proven to satisfy paragraph 4(a)(iii) of the Policy, but the evidence supports a finding of registration in bad faith. The only demonstrated use of the disputed domain names, involving petroleum products, indicates the necessary knowledge of Complainant and its distinctive mark and Respondent’s targeting of Complainant.

D. The Registrar’s Inaction.

As noted the Registrar failed to respond to four requests from the Center, each seeking verification of the registrant’s contact information and standard assurances regarding its registration agreement. Prior to commencing this proceeding Complainant made four inquiries of the Registrar to ascertain the language of the registration agreement, in order to file its Complaint in that language. See Rules, paragraph 11(a). No reply was forthcoming. (Complaint, paragraph 10 and Exhibit 3)

The Registrar’s continued silence, which until an explanation be provided the Panel will presume to be intentional,2 is unhelpful and irresponsible, but unless registrar recalcitrance is to be allowed (in effect) to derail UDRP proceedings, cannot be regarded as creating any insurmountable jurisdictional impediment to the Center’s and the Panel’s proceeding with this case. The Policy and Rules do not expressly require registrar verification, and though an implied requirement of the Policy’s working effectively, the lack of it does not necessarily deprive a respondent of any matter that could be argued was necessary to prepare a defense or otherwise given “a fair opportunity to present its case,” (Rules, paragraph 10(a)). A lack of registrar verification will typically mean that the registrant’s billing information (which is kept by the registrar, is not publicly listed in the WhoIs, and where available is a requirement for notification under the UDRP Rules) is not supplied by the registrar to the provider, thereby potentially impacting the registrant/respondent’s opportunity to receive notice of the dispute. Any adverse impact on the registrant/respondent’s ability to defend arising from this must in such circumstances be regarded as the fault of the registrar, and does serve to underscore the importance of timely and complete registrar verification replies. A registrar’s failure to reply to a UDRP provider’s verification request can also complicate a Policy proceeding in a number of serious ways, including:

As noted by the Center in its three reminder communications to the Registrar, without affirmative confirmation from a registrar that the disputed domain name has been locked to prevent breach of paragraph 8(a) of the Policy there is the danger that an unscrupulous respondent might engage in cyberflight.

As noted by the Center and Complainant, the provider, parties, and panel cannot be sure of the language of the registration agreement and thus the presumed language of these proceedings.

The Center and Complainant cannot be certain that the registrant is bound by its registration agreement to submit to a legal proceeding in the courts in the jurisdiction in which the registrar is located. (Any ICANN-approved registrar is required to include such a provision; see section 3.7.7.10 of the ICANN Registrar Accreditation Agreement. A registrar’s contractual obligations to ICANN by themselves, however, do not bind a registrant to anything.)

As the panel in the Peugeot case, supra note 2, noted, these are not trivial matters, for obvious reasons. There is further cause for concern with this Registrar, for a recent decision indicates that it has similarly ignored provider inquiries. See Onduline v. Private Registration Do,
WIPO Case No. D2011-1129.

And the Registrar’s continued silence raises from speculation to a reasonable likelihood the possibility that its inaction will continue after the Panel’s order in this case that the disputed domain names be transferred to Complainant. That of course would also breach the Registrar’s contractual obligations to ICANN. More importantly to the Panel, such inaction would work real hardship upon Complainant, which (should the order not be implemented) might be forced to commence legal action in a foreign court3 to effect a transfer that the Policy and ICANN require absent intervening legal action by the unsuccessful respondent. Such a transgression would reverse the Policy’s placing upon the losing party the obligation promptly to seek court aid if dissatisfied with a panel decision.

This Panel lacks any authority to demand anything of the Registrar; indeed so does the Center. All this Panel can do, as did the panel in the Onduline case noted above, is to request that the Center again advise ICANN of its recalcitrant registrar’s conduct in this proceeding. Perhaps two reminders within a month will prompt ICANN to take appropriate disciplinary action.

The Panel also urges ICANN (as the registrar-accrediting agency) to take appropriate steps to encourage or require as a matter of standard contracting practice timely registrar replies to UDRP provider verification requests. A failure on ICANN’s part to take appropriate steps to address registrar conduct such as has occurred in this and the Onduline case can only come at a cost to the credibility of its processes in the eyes of interested parties – mark owners properly invoking the Policy to enforce their rights and domain name owners who might fail to receive timely notice of UDRP proceedings brought against them.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <copapetrobras.com> and <copapetrobrasdetenis.com> be transferred to Complainant.

Richard G. LyonSole PanelistDated: September 13, 2011

1 The Center’s records indicate that the Complaint was delivered to Respondent by courier, so there is no issue of jurisdiction in this default case. Rules, paragraph 2(a).

2 Compare Automobiles Peugeot v. PrivacyProtect.org / Domain Administrator, Domain Tech Enterprises,
WIPO Case No. D2011-1002, in which the registrar belatedly submitted a response to the Center’s inquiry with an apology and a reason (considered by the panel in that case and by this Panel to be lame).